Article 153 EPC: The European Patent Office as designated Office or elected Office

Text of Article 153 EPC

In plain English

A PCT application that designates the EPO and has an international filing date is treated as a European application: a Euro-PCT application. The international publication replaces European publication if it is in English, French or German, and the international search report replaces the European search report (Article 153(3) and (6)).

To enter the European phase you perform the Rule 159(1) acts within 31 months of the filing date or, if priority is claimed, the priority date: file any translation, specify the documents the procedure is to be based on, pay the filing fee and, where a supplementary search is needed, the search fee, and pay the designation fee, examination request and third-year renewal fee if those are already due.

If the EPO was the International Searching Authority (or the supplementary authority), the supplementary European search is dispensed with and you go straight to the Rule 161(1) communication. Otherwise the EPO draws up a supplementary European search report after the Rule 161(2) period, and the search fee is payable on entry.

The language of the proceedings is fixed by the PCT publication. G 4/08 held that a PCT application published in an EPO language cannot switch to another official language on entry, and the EPO must use the language of the proceedings in written proceedings.

A Euro-PCT application counts as prior art under Article 54(3) only once the conditions in Article 153(3) or (4) and the Implementing Regulations are met (Article 153(5)). Missing a 31-month act leads to deemed withdrawal, which can usually be remedied by further processing.

Deadlines and fees

Key decisions

• G 4/08 (Language of proceedings/MERIAL) : A PCT application filed and published in an EPO language cannot be translated into another official language on entry, and the EPO uses the language of the proceedings in written proceedings.

Common objections

Claims on entry differ from the searched claims

Claims directed to an invention the EPO as ISA did not search trigger Rule 164(2). Decide on the claim set before the Rule 161 period ends.

Negative written opinion from the EPO as ISA

A substantive reply is mandatory under Rule 161(1); without it the application is deemed withdrawn.

Drafting and prosecution tips

• If the EPO was not the ISA, use the Rule 161(2) period to amend the claims you want searched in the supplementary search.
• Diarise 31 months from the earliest priority date, not from the PCT filing date.